No. 08-103
================================================================
In The
Supreme Court of the United States
---------------------------------♦--------------------------------REED ELSEVIER, INC. et al.,
Petitioners,
v.
IRVIN MUCHNICK et al.,
Respondents.
---------------------------------♦--------------------------------On Writ Of Certiorari To The
United States Court Of Appeals
For The Second Circuit
---------------------------------♦--------------------------------BRIEF FOR AMICI CURIAE COMPUTER &
COMMUNICATIONS INDUSTRY ASSOCIATION
AND NETCOALITION IN SUPPORT
OF THE JUDGMENT BELOW
---------------------------------♦--------------------------------JONATHAN BAND
Counsel of Record
JONATHAN BAND PLLC
21 Dupont Circle NW
8th Floor
Washington, DC 20036
(202) 296-5675
[email protected]
Counsel for Amici Curiae
August 26, 2009
================================================================
COCKLE LAW BRIEF PRINTING CO. (800) 225-6964
OR CALL COLLECT (402) 342-2831
i
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................
iii
INTEREST OF AMICI .........................................
1
SUMMARY OF ARGUMENT ..............................
4
ARGUMENT ........................................................
5
I.
THE WRIT SHOULD BE DISMISSED .....
5
A. In the Courts Below, Petitioners Repeatedly Acknowledged the Subject
Matter Jurisdictional Basis for Section
411(a)......................................................
7
1. The Settlement is Predicated on
Section 411(a) .................................
8
2. Petitioners Argued the Subject Matter Jurisdictional Basis for Section
411(a) Before the Mediator .............. 10
3. Petitioners Argued the Subject Matter Jurisdictional Basis for Section
411(a) Before the Trial Court ........... 11
4. Petitioners Argued the Subject Matter Jurisdictional Basis for Section
411(a) Before the Court of Appeals .. 12
5. Petitioners Appear to Concede the
Subject Matter Jurisdictional Basis
for Section 411(a) Even in the Petition for Certiorari ............................. 15
6. Comparison of Petitioners’ Brief in
Support of their Petition for Certiorari and their Merits Brief ............. 16
ii
TABLE OF CONTENTS – Continued
Page
7. The Significance of Petitioners’
Prior Position that Section 411(a)
is a Subject Jurisdictional Limitation .................................................. 17
B. There Is No Circuit Split ..................... 18
II.
THE SECOND CIRCUIT CORRECTLY
INTERPRETED SECTION 411(A) TO BE
JURISDICTIONAL.................................... 23
A. The Plain Words of the Statute Support the Judgment Below .................... 23
B. Petitioners Propose a Presumption
That Does Not Exist ............................ 27
C. Petitioners’ “Withdrawal” Theory Overlooks the Statutory Nature of Copyright ..................................................... 28
D. The Section 205(d) Recordation Requirement Supports the Conclusion
that Section 411(a) is Jurisdictional ... 30
CONCLUSION..................................................... 34
iii
TABLE OF AUTHORITIES
Page
CASES
Arbaugh v. Y & H Corp., 546 U.S. 500 (2006) ...........27
Basic Books, Inc. v. Kinko’s Graphics Corp., 758
F. Supp. 1522 (S.D.N.Y. 1991) ................................33
Bowles v. Russell, 551 U.S. 205, 127 S. Ct. 2360
(2007) .......................................................................19
Brooks-Ngwenya v. Indianapolis Public Schools,
564 F.3d 804 (7th Cir. 2009) ...................................19
Burns v. Rockwood Distributing Co., 481
F. Supp. 841 (N.D. Ill. 1979) ...................................34
Co-opportunities, Inc. v. National Broadcasting
Co., Inc., 510 F. Supp. 43 (N.D. Cal. 1981) .............33
Dae Han Video Productions, Inc. v. Nekohyang
Oriental Market, Inc., 1987 WL 8327 (E.D.
Pa. 1987) ..................................................................32
Duncan v. Walker, 533 U.S. 167 (2001) .....................30
Editions Groupe i v. Anheuser-Busch, 1988 WL
70218 (S.D.N.Y. June 30, 1988) ..............................33
Editions Groupe i v. SRO Promotions, Inc.,
1989 WL 54118 (S.D.N.Y. May 16, 1989) ...............33
Forry, Inc. v. Neundorfer, Inc., 837 F.2d 259
(6th Cir. 1988) .........................................................32
G. P. Putnam’s Sons v. Lancer Books, Inc., 251
F. Supp. 210 (S.D.N.Y. 1966) ..................................22
H.K. Co., Inc. v. Mori Lee Associates, Inc., 1989
WL 297953 (S.D.N.Y. June 28, 1989) .....................33
iv
TABLE OF AUTHORITIES – Continued
Page
Hulex Music v. Santy, 698 F. Supp. 1024
(D.N.H. 1988) ..........................................................33
Kenbrooke Fabrics, Inc. v. Soho Fashions, Inc.,
690 F. Supp. 298 (S.D.N.Y. 1988), 1989 WL
117704 (S.D.N.Y. Oct. 2, 1989) ...............................33
Kontrick v. Ryan, 540 U.S. 443 (2004) .......................19
Layne & Bowler Corp. v. Western Well Works,
Inc., 261 U.S. 387 (1923) .........................................18
Lloyd v. Schlag, 884 F.2d 409 (9th Cir. 1989) ......31, 32
Lumiere v. Pathé Exchange, 275 F. 428 (2d Cir.
1921) ........................................................................21
Matsushita Elec. Indus. Co. v. Epstein, 516
U.S. 367 (1996) ........................................................15
McNabb Bennett & Associates, Inc. v. Terp
Meyers Architects, 1987 WL 7817 (N.D. Ill.
Mar. 10, 1987) .........................................................33
Meta-Film Associates, Inc. v. MCA, Inc., 586
F. Supp. 1346 (C.D. Cal. 1984) ...............................32
MGM Studios, Inc. v. Grokster Ltd., 545 U.S.
913 (2005) ..................................................................3
Morris v. Bus. Concepts Inc., 259 F.3d 65 (2d
Cir. 2001) .................................................................12
Nation’s Choice Vitamin Co. v. General Mills,
Inc., 526 F. Supp. 1014 (S.D.N.Y. 1981) .................32
Negron v. Rivera, 433 F. Supp. 2d 204 (D.P.R.
2006) ..........................................................................7
v
TABLE OF AUTHORITIES – Continued
Page
New York Times Co. v. Star Co., 195 F. 110
(C.C.S.D.N.Y. 1912) .................................................34
New York Times Co. v. Sun Printing & Publishing Association, 204 F. 586 (2d Cir. 1912) ..............21
New York Times Co. v. Tasini, 533 U.S. 483
(2001) ...................................................................8, 34
Niken v. Holder, 129 S. Ct. 1749 (2009).....................25
Northern Songs, Ltd. v. Distinguished Productions, Inc., 581 F. Supp. 638 (S.D.N.Y. 1984) ...33, 34
Patch Factory, Inc. v. Broder, 586 F. Supp. 132
(N.D. Ga. 1984) .......................................................34
Quincy Cablesystems, Inc. v. Sully’s Bar, Inc.,
650 F. Supp. 838 (D. Mass. 1986) ...........................32
Raffoler, Ltd. v. Peabody & Wright, Ltd., 671
F. Supp. 947 (E.D.N.Y. 1987) ..................................33
Regions Hosp. v. Shalala, 522 U.S. 448 (1998) .........25
Robertson v. Shell Oil Co., 519 U.S. 337 (1997) ........25
Rockwell Int’l Corp. v. United States, 549 U.S.
457 (2007) ................................................................27
Ruskin v. Sunrise Management, 506 F. Supp.
1284 (D. Colo. 1981) ................................................34
Skor-Mor Products, Inc. v. Sears, Roebuck and
Co., 1982 WL 1264 (S.D.N.Y. May 12, 1982) ..........34
Sony Corp. v. Universal City Studios, 464 U.S.
417 (1984) ............................................................2, 28
vi
TABLE OF AUTHORITIES – Continued
Page
Swarovski America Ltd. v. Silver Deer Ltd., 537
F. Supp. 1201 (D. Colo. 1982) .................................34
Techniques, Inc. v. Rohn, 592 F. Supp. 1195
(S.D.N.Y. 1984) ........................................................34
TRW, Inc. v. Andrews, 534 U.S. 19 (2001) .................30
United States v. Trucking Ass’n, 310 U.S. 534
(1940). ......................................................................26
Wales Industries, Inc. v. Hasbro Bradley, Inc.,
612 F. Supp. 510, 514 (S.D.N.Y. 1985)....................33
Whimsicality, Inc. v. Rubie’s Costume Co., 891
F.2d 452 (2d Cir. 1989) ............................................ 11
Yamate USA Corp. v. Sugerman, 1991 WL
274854 (D.N.J. Mar. 7, 1991) ..................................33
STATUTES
Copyright Act of 1976, codified as amended at 17
U.S.C. § 101 et seq.:
17 U.S.C. § 106 ........................................................24
17 U.S.C. § 205(d) ........................... 30, 31, 32, 33, 34
17 U.S.C. § 411(a) ............................................ passim
17 U.S.C. § 501(b) ...................................................31
OTHER AUTHORITIES
William Patry, PATRY ON COPYRIGHT (2007) ....... passim
1
BRIEF FOR AMICI CURIAE COMPUTER
& COMMUNICATIONS INDUSTRY
ASSOCIATION AND NETCOALITION
IN SUPPORT OF THE JUDGMENT BELOW
The Computer & Communications Industry Association (CCIA) and NetCoalition submit this brief as
amici curiae in support of the judgment below, and
urge that the writ be dismissed.
---------------------------------♦---------------------------------
INTEREST OF AMICI1
The Computer & Communications Industry Association is a non-profit trade association dedicated to
“open markets, open systems, and open networks.”
CCIA members participate in many sectors of the
computer, information technology, and telecommunications industries and range in size from small entrepreneurial firms to the largest in the industry.
NetCoalition serves as the public policy voice for
some of the world’s most innovative Internet companies, including Google, Yahoo!, IAC/InterActive
Corp., Amazon.com, eBay, Wikipedia, and Bloomberg.
NetCoalition provides creative and effective solutions
1
Pursuant to S. Ct. R. 37, amici curiae CCIA and NetCoalition affirm that no monetary contributions were made for the
preparation or submission of this brief, and that no part of this
brief was drafted by any parties in this action. Counsel of record
for Petitioners, Respondents, and court-appointed amicus
Professor Merritt have consented to the filing of this brief, and
their letters of consent have been filed herewith.
2
to the critical legal and technological issues facing the
Internet.
Amici represent companies on the cutting edge of
information technology. As amici are functionally
regulated by the copyright system, they depend upon
it to fulfill its constitutional purpose of promoting
progress. The companies represented by amici develop products and services that may qualify for the
protection offered by the federal copyright system. At
the same time, many of these companies’ services or
products enable or support the transmission or
processing of information that is potentially subject to
federal copyright protection. Internet and communications-related services are particularly aware of the
reach of federal copyright law. Insofar as every blog
post, electronic mail, voicemail, instant message, text
message, and “tweet” may constitute works of authorship fixed in a tangible medium, each is potentially
entitled to decades of federal copyright protection
from the moment of fixation. Even the lowliest email
may wield the vast powers bestowed upon works of
authorship by Title 17.
Technology industries are therefore both enabled
and yet imperiled by the federal copyright system.
U.S. courts administer this apparatus in the hopes of
achieving the “difficult balance between the interests
of authors . . . in the control and exploitation of their
writings . . . and society’s competing interest in the
free flow of ideas, information, and commerce . . . ”
Sony Corp. v. Universal City Studios, 464 U.S. 417,
429 (1984). The inherent challenge in this exercise is
3
that “[t]he more artistic protection is favored, the
more technological innovation may be discouraged;
the administration of copyright law is an exercise in
managing the trade-off.” MGM Studios, Inc. v. Grokster Ltd., 545 U.S. 913, 928 (2005). One aspect of this
trade-off is that registration serves as the gatekeeper
to the courthouse.
Although it imposes minor costs upon authors,
“[r]egistration of creative works confers significant
benefits on the Library of Congress and the public.”
United States Brief (“U.S. Br.”) 4. In addition to the
public benefits, registration serves to mitigate the
number of unmeritorious cases brought. By imposing
this minor hurdle to access to the courthouse, the
registration system separates wheat from chaff and
ensures that only works worthy of a governmentcreated limited monopoly can be the subject of federal
litigation. This price – whose deposit and recordcreating aspects ultimately inure to the public benefit
– is a small one to pay to prevent litigants from
invoking the authority conferred by the Copyright Act
without just cause.
Registration’s function as gatekeeper to the
courthouse is especially important to technology
companies. When every blog and tweet might be
protectable under copyright, the registration requirement dramatically reduces technology companies’ potential exposure to copyright infringement
claims in general and copyright class actions in
particular. Every day, the servers operated by Internet companies make copies of billions of copyrightable
4
works. But because so few of these works are registered, the threat posed by class actions regarding
these works currently is small.
However, if this Court reverses centuries of
precedent and finds that 17 U.S.C. § 411(a) is not
jurisdictional, class action lawyers will declare open
season on Internet companies. To be sure, if they
chose to litigate, Internet companies would ultimately
succeed in convincing courts to dismiss most of these
complaints. Nonetheless, a ruling that section 411(a)
is not jurisdictional will encourage copyright “trolls”
to file more class actions for the purpose of extracting
quick nuisance value settlements. Accordingly, amici
seek to preserve the long-standing rule that section
411(a) is a jurisdictional bar to the federal courthouse.
---------------------------------♦---------------------------------
SUMMARY OF THE ARGUMENT
The Court should leave standing the opinion of
the Second Circuit, based on both the record and the
law. First, the record indicates that, contrary to
assertions at the petition stage, before the district
court the parties extensively raised the subject matter nature of 17 U.S.C. § 411(a). Accordingly, under
any characterization of section 411(a) offered by the
parties or amici, the decision below was sound.
Second, on the law, there is no circuit split on the
issue. Reading Petitioners’ and Respondents’ two
5
briefs is to believe that the opinion below is an aberration, a lark, an untoward departure from wellsettled case law. The reality is far different: not only
does the Second Circuit’s opinion faithfully follow
precedent in that court going back to 1911, but every
other court of appeals to have decided the issue
agrees, as do hundreds of district courts.2 The aberrations are the scattered district court opinions, less
3
than a handful, that take a different view, and even
these are inconsistent with governing decisions in the
relevant court of appeals. There is therefore no circuit
split, the traditional ground on which this Court
grants certiorari.
---------------------------------♦---------------------------------
ARGUMENT
I.
THE WRIT SHOULD BE DISMISSED.
For 219 years, Congress and the courts have
regarded as a subject matter jurisdictional limitation
the requirement that registration of a claim to copyright be made (or after 1977, attempted but rejected)
prior to instituting an infringement suit. Unlike
private interests represented in numerosity or timing
requirements in other federal statutes, the copyright
registration prerequisite serves valuable, undisputed
public policy purposes that cannot be waived by the
2
See Brief of Professor Deborah Merritt (“Merritt Br.”),
Appx. C.
3
See Merritt Br. 41 n.13.
6
parties to a lawsuit. To protect those policy goals, the
courts, including appellate courts, must be able to
raise lack of compliance sua sponte. In this case, the
parties raised the lack of compliance before both the
district court and the court of appeals. In both the
lower courts, Petitioners took the position that section 411(a) involved subject matter jurisdiction.
To read the current briefs of the parties and their
amici, the parties were bushwhacked at the court of
appeals: after years of “difficult” and “heated” negotiations, a settlement was reached with the assistance
of a mediator and approved by the district court. No
one, we are led to believe, questioned the jurisdiction
of the district court to hear the case and approve the
settlement until the appeal, when the Second Circuit
held that the word “jurisdiction” in section 411(a) has
meaning.
Thus, Petitioners assert the Second Circuit
“upended that agreement on a ground that was not
raised by any of the parties”, having “sua sponte
requested briefing on ‘whether the district court had
subject matter jurisdiction over claims concerning the
infringement of unregistered copyright.’ ” Petitioners’
Merits Brief (“Pet Br.”) 2, 7.
One might conclude from this statement that the
issue of whether section 411(a) limits the subject
matter jurisdiction of the federal courts to hear
copyright infringement cases was first raised by the
Second Circuit. That is the very basis for the United
States’ brief, whose only apparent difference with the
7
majority opinion below is that other than in exceptional circumstances, the issue will be deemed forfeited unless raised at the trial court. U.S. Br. 27-31.
But even the United States acknowledges, “district
courts should enforce th[e] requirement sua sponte,
and should decline to adjudicate an infringement suit
on the merits when the plaintiff has not complied
with the statutory prerequisite.” U.S. Br. 11. Indeed,
every brief before this Court takes the further position that section 411(a) bars an infringement action
with respect to United States works where the parties
have raised the issue at the trial level.
A. In the Courts Below, Petitioners Repeatedly Acknowledged the Subject
Matter Jurisdictional Basis for Section 411(a).
The record refutes the theory that the Second
Circuit ventured, uninvited, into the question of
subject matter jurisdiction. As Francois de la Rochefoucauld observed: “There is nothing more horrible
than the murder of a beautiful theory by a brutal
gang of facts.” See Negron v. Rivera, 433 F. Supp. 2d
204, 207 (D.P.R. 2006), aff ’d, 504 F.3d 151 (1st Cir.
2007). The brutal gang of facts in this case demonstrates that the Petitioners had, from the inception of
the case, regarded section 411(a) as involving subject
matter jurisdiction, and had so argued before the
district court and the court of appeals. The first time
Petitioners took the position that section 411(a) does
not act as a subject matter limitation on the courts
8
was after this Court granted certiorari and had
squarely presented that issue. Even in the Petition
for Certiorari, Petitioners did not deny the subject
matter jurisdictional basis for section 411(a), and for
a very good reason: compliance with section 411(a) is
the basis for the settlement.
1. The Settlement is Predicated on Section 411(a).
Defendants (Petitioners here) and the so-called
Class A and Class B plaintiffs (those who had registered) used the lack of compliance with section 411(a)
by the Class C plaintiffs (those who had not registered) as the hammer by which the Class C plaintiffs
were to be given the smallest possible award, and
possibly zero. Unless section 411(a) deprives the
federal courts of subject matter jurisdiction, the
entire basis for the settlement fails.
Section 411(a) was thus the heart and wallet of
the proceedings before the district court: liability was
already established by this Court in New York Times
v. Tasini, 533 U.S. 483 (2001), and thus the only
battles were over money. Having chosen to divide the
money based solely on compliance with section 411(a),
rather than, say, the fair market value of the articles,
the parties cannot now claim that the provision was
raised for the first time at the court of appeals by the
court of appeals. Indeed, as explained below, flatly
contrary to what Petitioners have told this Court, in
their merits brief to the Second Circuit Petitioners
themselves took the position that section 411(a)
9
limited courts’ subject matter jurisdiction, before the
Second Circuit asked for supplementary briefing. It
seems very likely that it was Petitioners’ own brief
taking that position which caused the Second Circuit
to ask for additional briefing. And even in their letter
brief to the court of appeals, Petitioners continued to
argue that section 411(a) limited the courts’ subject
matter jurisdiction. It was only after the court of
appeals threw out the settlement that the Petitioners
changed their position before this Court; yet, their
need to retain section 411(a) as the foundation for the
settlement remains, which explains why Petitioners’
proposed questions for certiorari were so convoluted,
leading this Court to write its own question.
Given Petitioners’ strategic decision to use section 411(a) to drive a hard economic bargain in the
settlement, it is no wonder those negotiations are
described as having been heated and intense: section
411(a) was used to push down the value of the settlement for unregistered authors potentially to zero,
leading those authors to cry foul. The proposed settlement caps the potential payments for the 36 major
corporations who make up the Petitioners at the
maximum figure of $18 million; the minimum figure
is $10 million.
What do the Category C authors – those who did
not comply with section 411(a) receive in the settlement? The answer is not much, maybe nothing; but
whatever it is, the amount is small relative to those
authors who did comply with section 411(a): Class A
10
authors will receive payments from $875 to $1,500
per infringed work. J.A. 122-23. Class B authors will
receive payments in the amount of the “greater of
$150 or 12.15% of the original sale price.” J.A. 123.
Class C authors will receive $5 to $60 per work,
unless the proposed overall payment cap of $18
million would otherwise be breached due to number
of claims by Class A and B authors. In that event,
rather than simply raise the payments made to
authors whose works have been infringed above $18
million to compensate authors fairly for Petitioners’
admitted infringement, payments to Class C authors
would be reduced, J.A. 124. Payments to Class A and
B authors would be reduced “only if necessary,” that
is, only after payments to all Class C authors are
reduced to zero. Pet. App. 9a.
This is why the issue of section 411(a) as a subject matter jurisdictional bar was raised by the parties before the district court: section 411(a) was the
device by which unregistered authors were squeezed.
As such, the record below alone rebuts the arguments
of the parties and their amici.
2. Petitioners Argued the Subject Matter Jurisdictional Basis for Section
411(a) Before the Mediator.
From the outset, Petitioners took the position
that the settlement was impossible if it included
unregistered works, and repeatedly characterized
section 411(a) as involving subject matter jurisdiction
11
before the district court.4 On February 15, 2002, the
Petitioners submitted a memorandum to the mediator which devoted an entire subsection to explaining
that section 411(a) is jurisdictional and thus bars
class certification of unregistered works. See Defendants’ Joint Mem. of Feb. 15, 2002, at 18-19, reprinted
in Second Circuit J.A. 1601-02. The Petitioners’ memo
quoted section 411(a), saying that this provision,
“whose language could hardly be clearer, precludes
the certification of any class respecting works in
which copyright has not been registered.” Id. The
Petitioners also explained that “[e]xtensive authority
suggests that registration before institution of the
claim is required.” Id. (listing citations including
Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d
452, 453 (2d Cir. 1989) (registration is prerequisite to
copyright infringement claim)).
3. Petitioners Argued the Subject Matter Jurisdictional Basis for Section
411(a) Before the Trial Court.
By working out a cap for their payments based on
section 411(a), Petitioners painted themselves into a
corner: they needed the subject matter jurisdictional
bar of section 411(a) to justify the settlement’s threetiered payment system, which disadvantaged certain
authors based entirely on non-compliance with section 411(a), but they needed the settlement to be
4
For other examples, see Merritt Br., Appx. A.
12
approved despite the presence of unregistered works
in the class. They attempted to reconcile these conflicting positions in a September 2005 submission to
the district court. That submission attempted to
redefine subject matter jurisdiction as applying to the
author, but in doing so repeatedly made fatal concessions. The Petitioners admitted that “[b]ecause the
Copyright Act confers jurisdiction only for claims
concerning registered works and precludes any infringement action for an unregistered work, the Court
would lack subject matter jurisdiction over any person whose ‘claims’ all involve unregistered works. 17
U.S.C. § 411(a); Morris v. Bus. Concepts Inc., 259 F.3d
65, 68 (2d Cir. 2001) (emphasis added).” Second
Circuit Joint Appendix, J.A. 1554. The Petitioners
also acknowledged that the plaintiffs’ inability to
establish liability was “because a huge proportion of
the claims were for works in which copyright had
never been registered, and which were not, therefore,
within the court’s subject matter jurisdiction.” J.A.
1550 (emphasis added). Additionally, the Petitioners
argued that “the law appeared to foreclose certifying
any class action that would have encompassed claims
respecting unregistered works . . . ” J.A. 1551.
4. Petitioners Argued the Subject Matter Jurisdictional Basis for Section
411(a) Before the Court of Appeals.
Before the Second Circuit, Petitioners repeated
arguments from the above submission, but also
added:
13
Because the Copyright Act confers jurisdiction over suits for infringement of United
States works only if those works are registered – and requires every infringement
plaintiff to allege registration – the district
court would have lacked subject matter jurisdiction over any complaint for infringement
of articles in U.S. newspapers and periodicals filed by a person whose “claims” all involved unregistered works. 17 U.S.C.
§411(a).
Brief for Plaintiffs-Appellees before the Second Circuit at 22 (emphases added).
This passage likely precipitated the Second
Circuit’s allegedly “sua sponte” request for supplementary briefing. But even after the Second Circuit
asked for supplementary briefing, Petitioners continued to describe section 411(a) as a limitation on the
courts’ subject matter jurisdiction. Given, however,
the need to get the settlement approved with unregistered claims, they could not directly answer the
question posed by the Second Circuit’s request –
“whether the District Court had subject matter
jurisdiction over claims concerning the infringement
of unregistered copyrights.” They chose not to answer,
instead formulating and answering a question aimed
at obtaining settlement approval. The Petitioners’
letter brief to the court of appeals professed them to
be:
constrained to rephrase the question, because the question posed implicitly assumes
14
that the District Court exercised “subject
matter jurisdiction over claims concerning
the infringement of unregistered copyrights.”
We do not understand that the District Court
did so. Rather, it asserted jurisdiction over a
lawsuit in which each and every claim of
each and every named plaintiff concerned a
properly registered work, consistent with 17
U.S.C. §411(a), and then exercised its power
to approve a class action settlement pursuant to Fed. R. Civ. P. 23(e), as to which
§411(a) plays no role.
17 U.S.C. §411(a) is phrased and has been
understood as a pre-condition to the exercise
of subject matter jurisdiction conferred by 28
U.S.C. §1338. It provides that “no action for
infringement of the copyright in any United
States copyright work shall be instituted until . . . registration of the copyright claim has
been made in accordance with this title.”
That requirement was literally and completely satisfied here. The actions in the District
Court were not instituted until registration of
the works named in suit was made in accordance with §411(a).
Merritt Br., Appx. A, 72a-73a (emphases added,
citations omitted). Nothing in section 411(a), however,
distinguishes between unregistered claims that are
not part of a class action and those that are.
If there remained any ambiguity regarding the
position of Petitioners’ (defendants below) on the
subject matter jurisdiction constraint posed by section 411(a), however, it was certainly erased by their
15
petition for rehearing before the Second Circuit. In
that petition, they declared that “[t]he court below did
not assume jurisdiction to adjudicate infringement
claims or grant damages regarding unregistered
works – powers that defendants agree the court
lacked.” See Merritt Br., Appx. A, 78a.
5. Petitioners Appear to Concede the
Subject Matter Jurisdictional Basis
for Section 411(a) Even in the Petition for Certiorari.
Before this Court, Petitioners’ prior endorsement
of section 411(a) as limiting courts’ subject matter
jurisdiction is not even mentioned, and Petitioners’
sensitivity to their prior position is reflected in their
proposed questions for certiorari, the first of which
refers to “the usual power of lower courts to approve a
comprehensive settlement releasing claims that
would be outside the courts’ subject matter jurisdiction to adjudicate”. See Cert. Pet. at i. This question
admits to Petitioners’ prior views that section 411(a)
indeed limits the courts’ subject matter jurisdiction
by acknowledging that the claims in question –
claims for unregistered works – are outside the
courts’ subject matter jurisdiction. Petitioners are
seeking approval of the settlement nonetheless, but
on other grounds, relying on the non-copyright case of
Matsushita Elec. Indus. Co. v. Epstein, 516 U.S. 367
(1996). Nowhere in their brief in support of the Petition for Certiorari do Petitioners state section 411(a)
is non-jurisdictional.
16
6. Comparison of Petitioners’ Brief in
Support of their Petition for Certiorari and their Merits Brief.
This Court’s restated Question wisely forced the
issue: “Does 17 U.S.C. § 411(a) restrict the subject
matter jurisdiction of the federal courts over copyright infringement actions?” Unable to rewrite the
question as they did before the court of appeals,
Petitioners now abandon their prior unequivocal
position that section 411(a) does limit federal courts’
subject matter jurisdiction.
Petitioners’ reversal of position between the
petition and merits brief is cast into greater relief by
the otherwise similar nature of these submissions.
While both briefs’ Statements of the Case begin quite
similarly, they then diverge radically.5 Petitioners’
Brief now claims that the Second Circuit “erected a
jurisdictional bar to the inclusion of unregistered
works in any settlement . . . [and] relied almost
exclusively on its own precedents to reach that conclusion”, whose holdings it dismisses as “ ‘drive-by
jurisdictional’ characterizations”. When petitioning
for certiorari, on the other hand, Petitioners claimed
that the “Second Circuit ignored decades of decisions
by this Court, federal appellate courts, and state
courts, which had uniformly held that in the interests
of settling disputes courts may release claims that
they lacked jurisdiction to adjudicate.” Compare Pet.
5
Compare Cert. Pet. 2 para. 2 with Pet. Br. 2 para. 2.
17
Br. 2, 3 with Cert. Pet. 2-3. Even in their first brief to
this Court, Petitioners concede that section 411(a) is
jurisdictional. Additionally, Petitioners’ description of
the Second Circuit’s ruling in the Petition Brief
focused on the court of appeals’ holding on 28 U.S.C.
§ 1367, and argued that Petitioners had complied
with the subject matter jurisdictional requirements of
section 411(a) by virtue of the named plaintiffs’ registrations. See Cert. Pet. 8-9. In Petitioners’ current
Brief, the Second Circuit’s sins are recast as relying
on dicta in two earlier circuit decisions that section
411(a) is jurisdictional, decisions that Petitioners had
themselves relied upon before the trial court. Pet. Br.
8-9.
7. The Significance of Petitioners’
Prior Position that Section 411(a) is
a Subject Jurisdictional Limitation.
The importance of Petitioners’ flip-flops on section 411(a) lies in the fact that no one, including
Petitioners, denies that where a party does raise
what has been mischaracterized as a “mandatory
provision” before the trial court, the court must
enforce that provision. The brief for the United States
makes this point explicit in section IIA, entitled
“Section 411(a) Is a Mandatory Prerequisite to Suit
That Should Be Strictly Enforced When Raised By A
Party,” U.S. Br. 20-24. As outlined above, Petitioners
repeatedly raised section 411(a).
18
According to this Court’s Rule 10, “[a] petition for
a writ of certiorari will be granted only for compelling
reasons.” Indeed, the Court has stated:
it is very important that we be consistent in
not granting the writ of certiorari except in
cases involving principles the settlement of
which is of importance to the public as distinguished from that of the parties, and in
cases where there is a real and embarrassing
conflict of opinion and authority between the
circuit courts of appeal.
Layne & Bowler Corp. v. Western Well Works, Inc., 261
U.S. 387, 393 (1923) (internal quote marks omitted).
Not only is there admittedly no circuit split in this
case, but as in Layne & Bowler, close examination of
the record reveals facts which render the dispute a
non-dispute; there is simply no case or controversy
before the Court since Petitioners raised the jurisdictional bar posed by section 411(a) before the district
court. They continued to do so before the court of
appeals. Under arguments espoused by the parties
themselves, the judgment below was sound. Accordingly, the writ should be dismissed.
B. There Is No Circuit Split.
Every court of appeals to have decided the issue
has held that section 411(a) concerns the court’s
19
subject matter jurisdiction,6 as have hundreds of
district courts, see Merritt Br., Appx. A, 81a; see also
William Patry, 5 PATRY ON COPYRIGHT § 17:64.50
(2007) (cataloguing cases) (2009 update available on
Westlaw at PATRYCOPY). According to Petitioners,
every single one of these opinions, including those
issued decades before Kontrick v. Ryan, 540 U.S. 443
(2004) were “drive-by” discussions. Pet. Br. 43. Many
decisions all going one way look instead like a wellridden highway. In Bowles v. Russell, 551 U.S. 205
n.2 (2007), this Court observed:
Regardless of this Court’s past careless use
of terminology, it is indisputable that time
limits for filing a notice of appeal have been
treated as jurisdictional in American law for
well over a century. Consequently, the dissent’s approach would require the repudiation of a century’s worth of precedent and
practice in American courts. Given the choice
between calling into question some dicta in
our recent opinions and effectively overruling
a century’s worth of practice, we think the
former option is the only prudent course.
6
In a per curiam opinion, Brooks-Ngwenya v. Indianapolis
Public Schools, 564 F.3d 804 (7th Cir. 2009) the Seventh Circuit
held that the requirement in section 411(a) that where an
application has been rejected, notification to the Register must
be given of the filing of an infringement suit by the rejected
applicant is “nonjurisdictional, but is still a prerequisite to the
institution of the infringement suit.” The court also noted the
grant of certiorari in this case. The court of appeals did not
reach the issue posed in this case because it was not before it.
20
In the case of section 411(a) and its predecessors,
there is an unbroken federal legislative line going
back 219 years.7 The line of case law in the Second
Circuit alone goes back to 1912, a mere three years
after passage of section 12, section 411(a)’s predecessor. In New York Times Co. v. Star Co., a case not
cited by the parties, Circuit Judge Lacombe held:
The subject of statutory copyright being one
wholly within the powers of Congress, it had
full power to restrict in any way it chose the
maintaining of such actions or proceedings in
the courts as are concerned with the subject
of infringement of the rights secured by such
statute. A prohibition so broad as this goes to
the jurisdiction of the courts to entertain
such action or proceedings, and if the prohibition were operative when the injunction
was served, the latter would be void, because
made in an action which could not be maintained, and of which, therefore, the court
could not have jurisdiction.
195 F. 110, 112 (C.C.S.D.N.Y. 1912) (emphasis added).
The following year, in another case also not cited by
7
The statutory history of the registration as a prerequisite
to bringing an infringement action may be traced further back,
to the English 1710 Statute of Anne and the U.S. state statutes
passed prior to the Constitution. See 5 PATRY ON COPYRIGHT
§ 17:64.10, at 195-96. Petitioners also invoke this history, but
conclude that by failing to disavow 19th century English precedents in 1976, Congress should be charged with having adopted
their meaning. See Pet. Br. 37 n.17.
21
the parties or their amici, the Second Circuit expressly endorsed Judge Lacombe’s opinion. With respect to
registration, it stated:
Manifestly the statute refers to precisely
such an action as this, otherwise the language is meaningless. We are not concerned
here with the wisdom or necessity of the provision. Congress was conferring a special
privilege upon authors and could limit that
privilege in any manner it saw fit. In order to
secure a valid copyright or a valid patent, it
is necessary to comply with every requirement of the law and a discussion of the wisdom or unwisdom of such requirements is
wholly irrelevant. If a change in the law be
needed, recourse should be had to the legislative and not to the judicial branch of the
government.
New York Times Co. v. Sun Printing & Publishing
Association, 204 F. 586, 587 (2d Cir. 1912).
In 1921, in affirming a decision by then district
judge Learned Hand, the Second Circuit, in construing section 12 held: “The parties cannot by agreement, expressed or implied, alter the statute.”
Lumiere v. Pathé Exchange, 275 F. 428, 430 (2d Cir.
1921). Such a holding of course is inconsistent with
treating the provision as non-jurisdictional.
In 1966, two years after section 411(a) was
drafted, a district judge in the Southern District of
New York, in dismissing a copyright infringement
action for lack of jurisdiction for failure to comply
22
with section 12 wrote: “Plaintiffs have not cited, nor
have I found any case in which jurisdiction was
retained after dismissal under these circumstances
and I see no justification for doing so here.” G. P.
Putnam’s Sons v. Lancer Books, Inc., 251 F. Supp.
210, 214 (S.D.N.Y. 1966) (emphasis added). The Patry
treatise, in its exhaustive examination of the case
law, found none after that date. See 5 PATRY ON COPYRIGHT § 17:64.40, at 202.
The legislative reports to the 1976 Act express an
intent to continue this unbroken line of case law:
The first sentence in section 411(a) restates the present statutory requirement that
registration be made before a suit for copyright infringement is instituted. Under the
bill, as under the law now in effect, a copyright owner who has not registered his claim
can have a valid cause of action against
someone who has infringed his copyright, but
he cannot enforce his rights in court until he
has made registration.
S. Rep. No. 94-473, 94th Cong., 1st Sess. 139 (1975);
H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 157
(1976).
In a recent amendment to the Copyright Act, the
House of Representatives, in discussing sections
411(a) and 412, also described them as “jurisdictional
and remedial provisions,” H.R. Rep. No. 110-617,
23
110th Cong., 2d Sess. 39 (2007).8 The parties below do
not cite to a single court of appeals opinion holding
that the registration requirement is not jurisdictional. Accordingly, the writ should be dismissed.
II.
THE SECOND CIRCUIT CORRECTLY INTERPRETED SECTION 411(A) TO BE JURISDICTIONAL.
A. The Plain Words of the Statute Support the Judgment Below.
There is an air of unreality in the parties’ briefs
about how Congress drafts statutes and how courts
interpret them. According to those briefs, Congress
engages in “jurisdiction-speak” only when it places
the provision in question in a chapter of a statute
that is (1) clearly demarcated as jurisdictional, and
(2) where the language employed uses the word
“jurisdiction” or a very close analogue in every sentence in the provision in question. See Pet. Br. 12; 17;
Muchnick Respondents’ Br. 12.
8
In attempting to play down the importance of this passage, Petitioners complain that Congress “did not clarify the
sense in which either section was ‘jurisdictional,’ nor explain
whether it used that term precisely or in the loose fashion
reflected in the lower courts’ recent case law.” Pet. Br. 32 n.14.
Petitioners apparently want Congress in drafting not only
legislative language but also committee reports to include a
preface along the lines of “We are using language precisely and
not loosely like some of those errant lower courts do.”
24
Conspicuously, the parties must propose a conjunctive test in order to overcome the embarrassing
fact that section 411(a) does use the word “jurisdiction.”9 But according to the parties, the word jurisdiction was not placed in the correct part of the
Copyright Act, nor in the correct sentence, even
though section 411(a) in its entirety is only three
sentences long and the sentence in which the word
jurisdiction is used concerns the identical question as
the other two sentences: the power of the federal
courts to hear a case where a registration has not
been obtained. So fatal to Petitioners’ appeal is section 411(a)’s use of the word jurisdiction that the
9
The provision reads:
“(a) Except for an action brought for a violation of the
rights of the author under section 106A(a), and subject to the provisions of subsection (b), no action for infringement of the copyright in any United States work
shall be instituted until preregistration or registration
of the copyright claim has been made in accordance
with this title. In any case, however, where the deposit, application, and fee required for registration have
been delivered to the Copyright Office in proper form
and registration has been refused, the applicant is entitled to institute an action for infringement if notice
thereof, with a copy of the complaint, is served on the
Register of Copyrights. The Register may, at his or
her option, become a party to the action with respect
to the issue of registrability of the copyright claim by
entering an appearance within sixty days after such
service, but the Register’s failure to become a party
shall not deprive the court of jurisdiction to determine
that issue.”
(emphasis added).
25
brief for the American Intellectual Property Law
Association, in support of Petitioners, conspicuously
omits the offending sentence from its quotation of the
provision. AIPLA Br. 11.10
This Court has repeatedly emphasized that
statutory interpretation takes place contextually,
Niken v. Holder, 129 S. Ct. 1749, 1756 (2009); Regions
Hosp. v. Shalala, 522 U.S. 448, 460 n.5 (1998); Robertson v. Shell Oil Co., 519 U.S. 337, 341 (1997). The
context of section 411(a) is plain: no suit for infringement may be instituted unless registration has been
obtained or rejected; the failure to comply deprives
the court of jurisdiction, but the failure of the Register of Copyrights to join does not. Section 411(a) is of
a piece, and should not be sliced-and-diced into
fragments so that the parts are less than its whole.
The Kontrick Court did not suggest that Congress
must use magic words for a provision to be deemed to
involve subject matter jurisdiction. Congress’s intent
in this regard should be determined by long-standing
and conventional tools of statutory interpretation:
Unlike Article III jurisdictional issues, which are
Constitutionally-dependent, the issue in this case is
one of simple statutory interpretation. To resolve this
issue, there is “no more persuasive evidence of the
purpose of a statute than the words by which the
10
AIPLA also proposes two interpretative categories for
section 411(a): narrow and broad. See AIPLA Br. 4. Amici are
unaware of any basis for the categories.
26
legislature undertook to give expression to its wishes.” United States v. Trucking Ass’n, 310 U.S. 534, 543
(1940). Read plainly in its context, and buttressed by
over two hundred years of history, section 411(a)
clearly acts as a subject matter jurisdictional limitation on the federal courts to hear claims of copyright
infringement where no registration has been obtained
from or rejected by the Copyright Office. That was
Congress’s intent, and that is how the lower courts
have interpreted Congress’s intent, through hundreds
of decisions. See Merritt Br., Appx. C, 81a-125a; 5
PATRY ON COPYRIGHT § 17:24. Nothing more can be
asked of Congress than that it make its meaning
plain, as it has done with section 411(a) and its
predecessors.11
11
We dispute the suggestion, drawn from the treatise by
one of Petitioners’ counsel, that copyright registration is analogous to a filing fee in civil actions. See U.S. Br. 29 n.17 (making
unsourced analogy); Pogrebin Respondents’ Br. 12 n.10 (making
analogy, crediting source). The clerk’s receipt of a filing fee
involves no exercise of expert discretion. A proper registration
requires not only a fee, but also a proper application, a proper
deposit copy, and most importantly, expert examination by the
Register to determine whether the work as embodied in the
deposit copy and the claim made in the application conform to
the requirements of the Copyright Act. We also note that those
who have received a registration or have been refused must as
well pay the civil filing fee.
27
B. Petitioners Propose a Presumption
That Does Not Exist.
Not content to slice-and-dice section 411(a) into
three unrelated sentences in an effort to render
meaningless its explicit reference to jurisdiction,
Petitioners assert that this Court has established a
presumption or “especially strong inference” that
Congress must “use[ ] the language of jurisdiction” to
“deprive federal courts of jurisdiction.” Pet. Br. 12-13
(citing Rockwell Int’l Corp. v. United States, 549 U.S.
457, 468 (2007); Arbaugh v. Y & H Corp., 546 U.S.
500, 515-16 (2006). Wholly apart from the fact that
Congress cleared this tautological hurdle by using the
word “jurisdiction” in section 411(a), the opinions of
this Court cited do not use the words “presumption”
or “inference,” and do not stand for the proposition for
which they are cited.12 Petitioners would require
Congress to have not only used the word “jurisdiction” in all three sentences of section 411(a) – using
the word in the final sentence is, according to Petitioners, insufficient – but also in 28 U.S.C. § 1338(a).
See Pet. Br. 23, 33. This is absurd. Section 1338(a)
covers not only copyrights, but also patents, plant
variety protection, and trademarks. Under Petitioners’ theory of statutory interpretation, Congress must
12
The “exception” theory proposed by Petitioners and their
amicus (Pet. Br. 18; AIPLA Br. 8-10), which asserts that the
presence of “exceptions” in section 411(a) constitutes proof that
the provision is not jurisdictional, is similarly baseless. The
briefs do not cite this Court’s jurisprudence for the “exception”
theory, and it is supported by neither Arbaugh nor Rockwell.
28
not only cross-reference in section 1338(a) every jurisdictional copyright, patent, plant variety protection,
and trademark statute to which it applies, but it
must also ensure that every jurisdictional intellectual
property statute in turn cross references section
13
1338(a). Such clumsy, burdensome drafting protocols
are not required.
C. Petitioners’ “Withdrawal” Theory Overlooks the Statutory Nature of Copyright.
Copyright is entirely a creation of Congress. “As
the text of the Constitution makes plain, it is Congress that has been assigned the task of defining the
scope of the limited monopoly that should be granted
to authors or to inventors in order to give the public
appropriate access to their work product.” Sony, 464
U.S. at 431. Congress need not grant copyright – the
Constitution permits Congress to enact copyright
legislation, but does not mandate it.14 As permissive,
Congress can decide not only the scope of the right,
13
The Muchnick Respondents assert that the federal courts
“obtain subject matter jurisdiction over copyright infringement
actions not from Section 411(a),” but rather from 18 U.S.C.
§§ 1131 or 1338(a). Muchnick Respondents’ Br. 24. However, the
question in this case is not how district courts may exercise
subject matter jurisdiction where it properly lies, but rather
when they may not exercise it. Congress has made clear in
section 411(a) that subject matter jurisdiction does not exist if
section 411(a) is not complied with.
14
Art. 1, § 1, cl. 8.
29
but jurisdictional issues for the right as well. The
first Copyright Act, the Act of 1790, did not give
federal courts the right to hear copyright cases, which
were instead heard by state courts. It was not until
1819 that the federal courts were given original, but
not exclusive jurisdiction to hear copyright cases. See
1 PATRY ON COPYRIGHT § 1:22. It was not until 1873,
that the federal courts were granted exclusive jurisdiction over copyright cases. See 1 PATRY ON COPYRIGHT § 1:34.
Since 1790, for the entire history of federal
copyright, there has been a limitation on all courts
that they lack jurisdiction to hear infringement
actions unless the registration has been complied
with: unfettered jurisdiction could hardly ever have
been “withdrawn,” as Petitioners suggest, see Pet. Br.
25-26, since it never existed. Chronologically, moreover, the direct predecessor to section 411(a), section
12 of the 1909 Act predated 28 U.S.C. § 1338(a) by 38
years15 and could thus hardly be considered to have
withdrawn jurisdiction from that later section.
As with Petitioners’ frog-like dissection of section
411(a), the “withdrawal” theory ignores the inconvenient fact that the 1976 Copyright Act was a complete
revision of the law. The 1976 Copyright Act was an
omnibus repeal of the 1909 Act. Section 411(a) was
drafted as part of Congress’s rethinking of various
15
It predated sections 24 and 256 of the Judicial Code of
1911, 36 Stat. 1087 by two years.
30
fundamental aspects of copyright law. One aspect
from previous law surviving the general revision with
little alteration was the requirement that courts had
no jurisdiction to hear infringement claims unless
registration had first been obtained, except when
registration had been sought, but refused. This
caveat was new, a result of the Register of Copyright’s
dissatisfaction with prior law which had required a
mandamus action be brought before an infringement
action be brought where registration had been refused, see 5 PATRY ON COPYRIGHT § 17:64.50, at 203-06.
In making this change, Congress wanted to ensure
that the failure of the Register to join the parties’
private suit did not deprive the court of jurisdiction.
H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 157
(1976); S. Rep. No. 94-473, 94th Cong., 1st Sess. 139
(1975). Had Congress not considered section 411(a) to
be jurisdictional, it would not have required the
language “but the Register’s failure to become a party
shall not deprive the court of jurisdiction to determine that issue.” This Court has repeatedly held that
words in a statute are to be given meaning and not
treated as surplusage. TRW, Inc. v. Andrews, 534 U.S.
19, 31 (2001); Duncan v. Walker, 533 U.S. 167, 174
(2001). The parties’ approach to section 411(a) does
precisely that.
D. The Section 205(d) Recordation Requirement Supports the Conclusion
that Section 411(a) is Jurisdictional.
In what seems like a throw-away point, Petitioners state that former 17 U.S.C. § 205(d), enacted as
31
part of the 1976 Act, and repealed as part of the
Berne Convention Implementation Act of 1988,16
supports Petitioners’ argument that the word “institute” in sections 205(d), 411(a), and 501(b) indicated
the word referred to a precondition, not a subject
17
matter jurisdictional requirement. In a footnote,
Petitioners claim: “Former §205(d) expressly required
recordation of a transferee’s chain of title as a ‘prerequisite to [an] infringement suit.’ No appellate court
ever held it jurisdictional.” Pet. Br. 46 n.24. Petitioners overlook Lloyd v. Schlag, 884 F.2d 409 (9th Cir.
1989), however, where the court of appeals affirmed a
Rule 11 award of attorney’s fees against an attorney
who had failed to comply with section 205(d), resulting in the district court granting a motion to dismiss
for lack of subject matter jurisdiction. The court held
“that a reasonable attorney admitted to practice
before the district court would have discovered that a
copyright infringement suit cannot be brought unless
16
Pub. L. No. 100-568, §§ 5(1), (2), 13, 102 Stat. 2857, 2861
(Oct. 31, 1988).
17
As enacted, section 205(d) read:
No person claiming by virtue of a transfer to be the
owner of copyright or of any exclusive right under a
copyright is entitled to institute an infringement action under this title until the instrument of transfer
under which such person claims has been recorded in
the Copyright Office, but suit may be instituted after
such recordation on a cause of action that arose before
recordation.
The origins of the term “institute” in section 411(a), is discussed
at 5 PATRY ON COPYRIGHT § 17:64.40 n.3, at 200-01.
32
and until the copyright transfer has been properly
recorded, and ascertained that the recordation has
been accomplished.” 884 F.2d at 412 (citing 17 U.S.C.
§ 205(d)). Similarly, in Forry, Inc. v. Neundorfer, Inc.,
837 F.2d 259 (6th Cir. 1988), the issue was raised
before the Sixth Circuit, but not reached, although
the court of appeals appears not to have disputed
the jurisdictional nature of the requirement. Id. at
262 (“Under 17 U.S.C. § 205(d) the owner of a
transferred copyright must record the transfer in
order to institute an infringement action. It has
been held that recordation of the transfer of a
copyright is a jurisdictional prerequisite to suit.”)
(citing Nation’s Choice Vitamin Co. v. General Mills,
Inc., 526 F. Supp. 1014, 1017 (S.D.N.Y. 1981)).18
Amici have found no district court opinion holding
section 205(d) was not jurisdictional19 (nor do
18
Nation’s Choice itself held that “Plaintiff ’s failure to
comply with this condition precedent strips this court of subject
matter jurisdiction over plaintiff ’s copyright claim.” Nation’s
Choice Vitamin Co. v. General Mills, Inc., 526 F. Supp. 1014,
1017 (S.D.N.Y. 1981).
19
The court in Dae Han Video Productions, Inc. v. Nekohyang Oriental Market, Inc., 1987 WL 8327 (E.D. Pa. 1987)
referred to the provision as a “mandatory prerequisite” without
explaining what was meant by the term, but defendant, as noted
by the court, challenged the court’s subject matter jurisdiction.
The court did not disagree with that characterization in its brief
order. The court in Quincy Cablesystems, Inc. v. Sully’s Bar, Inc.,
650 F. Supp. 838, 850-51 (D. Mass. 1986) referred to both section
205(d) and section 411(a) as a condition precedent and jurisdictional. In Meta-Film Associates, Inc. v. MCA, Inc., 586 F. Supp.
1346, 1351 (C.D. Cal. 1984), the court in addressing defendant’s
(Continued on following page)
33
Petitioners offer any), and numerous courts have
held that it is.20
jurisdictional argument, referred to the section as a condition
precedent for the purpose of permitting a plaintiff who received
and recorded an assignment after the suit was filed to proceed.
To the same effect is Co-opportunities, Inc. v. National Broadcasting Co., Inc., 510 F. Supp. 43, 48-49 (N.D. Cal. 1981). This is
the approach taken in Northern Songs, Ltd. v. Distinguished
Productions, Inc., 581 F. Supp. 638, 641 (S.D.N.Y. 1984) which
took the same approach and treated the section as jurisdictional.
20
Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp.
1522, 1541 (S.D.N.Y. 1991); Yamate USA Corp. v. Sugerman,
1991 WL 274854, at *4 (D.N.J. Mar. 7, 1991); Wales Industries,
Inc. v. Hasbro Bradley, Inc., 612 F. Supp. 510, 514 (S.D.N.Y.
1985) (in a section entitled “Subject Matter Jurisdiction”); H.K.
Co., Inc. v. Mori Lee Associates, Inc., 1989 WL 297953, at *2
(S.D.N.Y. June 28, 1989) (“recordation of the transfer of a
copyright is a jurisdictional prerequisite to maintenance of a
copyright infringement action, and failure to comply strips a
court of subject matter jurisdiction over the action under the
plain language of 17 U.S.C. § 205(d) ”); Editions Groupe i v. SRO
Promotions, Inc., 1989 WL 54118 (S.D.N.Y. May 16, 1989)(“This
copyright infringement dispute was previously dismissed by this
Court (Metzner, J.) for lack of jurisdictional standing after a jury
trial) (emphasis added) (see also Editions Groupe i v. AnheuserBusch, 1988 WL 70218 (S.D.N.Y. June 30, 1988) involving the
same plaintiff and same result); Kenbrooke Fabrics, Inc. v. Soho
Fashions, Inc., 690 F. Supp. 298, 302 (S.D.N.Y. 1988), 1989 WL
117704 (S.D.N.Y. Oct. 2, 1989); Hulex Music v. Santy, 698
F. Supp. 1024, 1027 (D.N.H. 1988); Raffoler, Ltd. v. Peabody &
Wright, Ltd., 671 F. Supp. 947, 952 (E.D.N.Y. 1987); McNabb
Bennett & Associates, Inc. v. Terp Meyers Architects, 1987 WL
7817, at *3 (N.D. Ill. Mar. 10, 1987) (“From the plain language of
this section and the previous holdings of other courts, it is clear
that an allegation of recordation is a jurisdictional prerequisite
necessary for filing a copyright-infringement action where such
an assignment is the basis of the plaintiff ’s claim. [citations
(Continued on following page)
34
The cases interpreting section 205(d), which even
according to Petitioners is structurally identical to
section 411(a), provides further, compelling proof that
section 411(a) acts as a limitation on the courts’
subject matter jurisdiction.
---------------------------------♦---------------------------------
CONCLUSION
The Petitioners, having painted themselves into
a corner, propose to escape by knocking down copyright’s jurisdictional walls as constructed by Congress. They threaten that unless they have their way,
“the nation’s electronic databases and archives will be
permanently depleted. . . .” Pet. Br. 3. The Court has
heard the same before from Petitioners, in the first
go-around in the Tasini case, and rejected it. New
omitted]. MBA’s failure to comply with this condition precedent
strips this court of subject-matter jurisdiction over MBA’s
copyright claim.”); Techniques, Inc. v. Rohn, 592 F. Supp. 1195,
1997 (S.D.N.Y. 1984) (“17 U.S.C. § 205(d) mandates that recordation of the transfer is a jurisdictional prerequisite to an
infringement action. Failure to comply with that provision
deprives the court of subject matter jurisdiction.”); Northern
Songs, Ltd. v. Distinguished Productions, Inc., 581 F. Supp. 638,
641 (S.D.N.Y. 1984); Patch Factory, Inc. v. Broder, 586 F. Supp.
132, 133 (N.D. Ga. 1984); Skor-Mor Products, Inc. v. Sears,
Roebuck and Co., 1982 WL 1264, at *2 (S.D.N.Y. May 12, 1982);
Swarovski America Ltd. v. Silver Deer Ltd., 537 F. Supp. 1201,
1203 (D. Colo. 1982); Ruskin v. Sunrise Management, 506
F. Supp. 1284, 1288-89 (D. Colo. 1981); Burns v. Rockwood
Distributing Co., 481 F. Supp. 841, 846-47 (N.D. Ill. 1979).
35
York Times Co. v. Tasini, 533 U.S. 483, 486 (2001).
The Court followed the will of Congress in Tasini, and
the sky did not fall. Nor will the sky fall this time if
the Court again follows the will of Congress. The writ
should be dismissed and the judgment of the United
States Court of Appeals for the Second Circuit should
be permitted to stand.
Respectfully submitted,
Jonathan Band
Counsel of Record
Jonathan Band PLLC
21 Dupont Circle NW
8th Floor
Washington, DC 20036
(202) 296-5675
[email protected]
Counsel for Amici Curiae
August 26, 2009